Customs enforcement on IP rights
Charlotte Wilding explains the effect of Regulation (EU) No. 608/2013 on the scope of IP rights covered by customs enforcement and the ability to seize infringing goods
Regulation (EU) No. 608/2013, concerning the enforcement of intellectual property rights (IPR), has been in force since January 2014 and aims to simplify the existing system.
Importantly, the new regulation extends the scope of IPR covered by customs enforcement to trade marks; trade names; copyright; design rights; patents; utility models; devices designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of technological measures; supplementary protection certificates for medical products or for plant protection; plant variety rights; topography of a semi conductor; and geographical indications.
The regulation also provides an accelerated procedure for the destruction of certain goods without the need to undergo infringement proceedings before the courts and without the explicit agreement of the owner of the goods, if certain conditions are met. Also, IPR holders may now prevent goods entering the EU in transit, where the goods bear an identical mark or a mark that ‘cannot be distinguished in its essential aspects from the trade mark’, unless the owner of the goods can demonstrate that the goods would not infringe the rights of the trade mark holder in the country of destination. Customs remains unable to take action in respect of parallel imports.
The regulation enables IPR holders to file an application for action (AFA) directly with customs offices in either (1) specific EU member states where the IPR holder has rights, or (2) all EU member states if the IPR holder has an EU-wide right. This asks that suspected counterfeit goods be detained at the relevant border(s). An AFA can be specific or general and is valid for one year, after which it can be renewed annually. Should use of the IPR in relation to the products change, an AFA can be updated to reflect this.
It is advisable to provide as much detail as possible within the AFA to best enable customs to distinguish between infringing and genuine goods, such as:
Proof of ownership of the IPR (e.g. trade mark registration certificate);
Detailed description of the goods;
Specific technical data on the authentic goods (e.g. markings, bar codes, or images);
The technical differences, if known, between the genuine and suspected infringing goods;
Places of manufacture and distribution;
Importation routes of genuine goods;
Details of authorised entities to import and distribute genuine goods; and
Information regarding previous infringements.
Although it is possible for customs to seize goods for which there is no AFA, in such situations the process for ensuring destruction of the goods is generally more complicated and expensive as customs only has one working day to identify a likely IPR holder, otherwise the goods are released to the owner. If a potential IPR holder is identified and wants the goods destroyed, it has four working days to submit an AFA to cover that particular seizure. If the AFA is not submitted in time, customs are required to release the goods.
In this regard, an AFA provides a higher level of certainty that infringing goods will be identified, seized, and reported. Without an AFA, infringing goods may slip through the net as customs may be unaware of the differences between genuine and infringing goods.
If goods are detained under an AFA, IPR holders generally have ten working days (extendible by another ten working days in certain circumstances) to judge whether the goods are infringing and, if so, consent to destruction of the goods. If the goods are perishable, the period of detention is reduced to three working days. Also, customs typically provides a sample of infringing products and assists in forming internal anti-counterfeiting policies.
Customs will also notify the owner of the goods of the seizure and they will have ten working days in which to consent or object to the destruction of the goods. Unless the owner explicitly objects, the goods will be destroyed provided the IPR holder has consented. Failure to respond by the owner is considered to be implied consent. If the owner explicitly objects to destruction of the goods, the IPR holder must bring court proceedings to confirm that there has been an infringement.
Finally, where small shipments are identified, namely a postal shipment weighing less than 2kg or comprised of three units or fewer, customs can automatically destroy such shipments without obtaining specific instructions from the IPR holder, provided that the relevant section is completed on the AFA, and the owner has not refused consent. This reduces the cost and time spent in reviewing small seizures and replying to customs.
It is worth stating that, for now, the UK is still a member of the EU. In the event that the UK leaves the EU, there remain obvious benefits in utilising the EU customs enforcement system, even if the UK is precluded.
Charlotte Wilding is an ordinary member of the Chartered Institute of Trade Mark Attorneys and a senior associate at Keltie